Appeal No. 2006-2609 Page 7
Application No. 10/359,165
are actually surprising and unexpected. Expected beneficial results are not evidence of
nonobviousness. See In re Skoner, 517 F.2d 947, 950, 186 USPQ 80, 82 (CCPA
1975). For example, Dr. Kent declared that among the “surprising benefits” of the
claimed drink are that “whey protein isolate provides a clearer product” (¶ 6) and that
including whey protein isolate “decreases the amount of lactose . . . and thus inhibits or
prevents the development of off-flavors in the claimed energy drink . . . that may occur
due to undesired reactions of lactose and/or fats during pasteurization and storage”
(¶ 7). Dr. Kent also states that “the large amount of lactose in milk base solids . . .
would be expected to contribute to undesirable browning and the likely development of
off-flavors during pasteurization and storage.” ¶ 10.
Liebrecht provides evidence that these properties would not have been
unexpected. Liebrecht teaches that a composition containing whey protein isolate is
clear with “a juice like consistency and flavor.” Col. 2, lines 20-22. Liebrecht also
teaches that “[w]hey protein isolate is greater than 90% protein by weight and contains
very low levels of fat and lactose.” Col. 2, lines 64-65. This disclosure shows that those
skilled in the art would have expected a composition containing WPI, rather than milk
base solids, to have fewer of the problems that are caused by lactose and fats.
Dr. Kent also declared that, surprisingly, the low pH of the claimed compositions
additionally “promotes microstability of the compositions by inhibiting or preventing
growth of microorganisms in the compositions.” ¶ 6. Weber, however, teaches that
acidity promotes microstability, stating that acidity “is a balance between maximum
acidity for microbial inhibition and optimum acidity for the desired beverage flavor.” Col.
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